RWANDA’S NEW INTELLECTUAL PROPERTY LEGISLATION FROM A TRADE MARK PROSECUTION PERSPECTIVE

Rwanda published and enacted Law n° 055/2024 of 20/06/2024 on the Protection of Intellectual Property (“the new Act”) on 31 July 2024, repealing Law n° 31/2009 of 26/10/2009. The new Act introduced some notable changes from a trade mark prosecution perspective.

Acquired distinctiveness

Previously, the Minister or a competent court had to consider whether a mark acquired distinctiveness through use. In terms of the new Act, the Registry can decide whether a mark acquired distinctiveness through use, without the need for an applicant to approach a competent court.

Filing requirements

Previously, applicants were allowed to comply with any outstanding filing requirements within seven days from the date of being informed of such outstanding requirements. In terms of the new Act, the Registry has to inform the applicant that he or she is required to comply with any outstanding filing requirements within fourteen days of receiving the notification. Although there appears to be greater leniency in complying with the filing requirements, it should be borne in mind that it may affect the filing date, as the date of receipt of the outstanding filing requirements is considered to be the filing date.

Publication

In terms of the new Act, the Registry is required to publish an accepted mark within 30 days from the date of examination.

Opposition

The new Act provides for a 60-day opposition period, which is calculated from the date of publication.

Extensions of time limits

A request can be made to the Registrar, which should include reasonable grounds supporting the request, to extend the time limit up to the same amount of time as provided for in the Act, in relation to the correction of errors, completion of applications, filing appeals against decisions, opposing or applying for the cancellation of rights on the basis of non-use. This means that a 60-day extension of the prosecution or opposition period can be obtained, upon request.

Renewal and grace period

In terms of the new Act, the grace period during which an expired trade mark may be renewed belatedly has been shortened to 6 months from the date of expiry of the trade mark. The previous Act allowed for a 10-month renewal grace period from the date of expiry of the trade mark.

International application and registration of a mark

The new Act domesticates the Madrid Agreement and includes various provisions dealing with the application of the Madrid Agreement in the Rwandan context. The new Act guides the Registry on the verification, certification and submission of an international application for registration of a mark with WIPO. The new Act also sets out timeframes for the examination, acceptance and provisional refusal. In particular, the Registry is required to examine an international application for registration of a mark and to notify WIPO within 12 months from the date of receipt of an international application for registration of a mark. If the Registry fails to notify WIPO of the decision to accept or reject the registration within 12 months from the date of receipt of the international application, the registration is deemed to be accepted. The new Act states clearly that an IR designated to Rwanda has the same effect as a national application or registration.

Source: Law n° 055/2024 of 20/06/2024 on the Protection of Intellectual Property